OPPOSITION No B 3 073 823

Walmart Apollo, LLC, 702 Southwest 8th Street, 72716 Bentonville, United States of America (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax HX1 2HY, United Kingdom (professional representative)

a g a i n s t

J.&D. McGeorge Limited, 272 Bath Street, Glasgow G2 4JR, United Kingdom (applicant), represented by Trademark Eagle Limited, Unit 4, Valley Court Offices, Lower Road, Croydon SG8 0HF, United Kingdom (professional representative).

On 03/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 823 is upheld for all the contested goods.

2. European Union trade mark application No 17 867 305 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 867 305 for the figurative mark . The opposition is based on, inter alia, European trade mark registration No 16 202 145 for the word mark ‘GEORGE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to the earlier European trade mark registrations, and Article 8(4) EUTMR in relation to the non-registered trade marks on which the opposition is also based.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 16 202 145 for the word mark ‘GEORGE’.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing.

The contested clothing is identically contained in both lists of goods.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is average.

c) The signs

GEORGE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark ‘GEORGE’, whereas the contested sign is the figurative mark ‘Mc George’, written in slightly stylised, handwritten, brown title-case letters. At the top right side, in a much smaller typeface, the verbal elements ‘OF DUMFRIES’ are written in fairly standard, uppercase brown letters.

In the contested sign, the words ‘Mc George’ are the dominant elements as they are, due to their size, much more visually striking than the remaining elements included in the sign.

The earlier mark ‘GEORGE’ will be understood as an English male given name or as a surname. This perception is applicable to the whole of the relevant public, not only due to the close correspondence of equivalent given names in some non-English-speaking territories, but also because there are many celebrities, such as George Clooney or Boy George, or politicians, such as former US president George W. Bush, who are famous and well-known around the world, including throughout the EU; therefore, this word will be recognised by all consumers as being a name. However, even though it has a meaning, it has no relation to the relevant goods and is, therefore, distinctive.

The word ‘Mc’ is a Gaelic surname prefix meaning ‘son of’. The word ‘George’ is perceived as having the same meaning as in the earlier mark. Since ‘Mc George’ has no relation to the relevant goods, it is distinctive. The word ‘OF’ is perceived by the whole public, since it is a basic English word, used, before a noun, as an indication of possession or origin. The wording ‘OF DUMFRIES’, will be perceived as an indication of origin by at least a part of the English-speaking public, for example, and is, therefore, weak, as the word ‘DUMFRIES’ might be recognised as a place. However, for another part of the public unacquainted with this place, the wording is meaningless and distinctive.

However, the element ‘Mc’ is often used to describe the noun that follows, in the sense that it refers to the son of George. Therefore, the main focus will rather be on the word ‘George’ in the contested sign than on the word ‘Mc’.

Visually, the earlier mark’s only element coincides in all of its letters ‘GEORGE’ with the most co-dominant verbal element ‘George’ of the contested sign.

The marks differ in the additional verbal elements ‘Mc’ and ‘OF DUMFRIES’ of the contested sign.

The fairly standard typeface and colour of the elements ‘OF DUMFRIES’ and slightly stylised typeface and colour of the elements ‘Mc George’ of the contested sign are not particularly significant, as they are quite common and are minimal in character. Therefore, they will not lead the consumer’s attention away from the words they embellish.

For all the aforementioned reasons, and taking into account the dominance and distinctiveness issues, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘GEORGE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Mc’, and in the sound of the additional words ‘OF DUMFRIES’ of the contested sign. However, due to the fact that this latter expression is visually secondary, as well as weak for part of the public, it is likely that consumers will only pronounce ‘Mc George’. It has been confirmed by the case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and they tend to shorten marks containing several words. This is especially the case when, as in the contested sign, the secondary elements can be easily separated from the dominant term (03/07/2013, T‑243/12, Aloha 100 % natural, EU:T:2013:344, § 34).

For all the aforementioned reasons, and taking into account the dominance and distinctiveness issues, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a name (either as a first name or as a surname), the signs are conceptually similar to at least an average degree. The additional word ‘Mc’ and the wording ‘OF DUMFRIES’ will add a/some concept(s) (if understood) that are not shared by the earlier mark. However, they will have a limited impact, as ‘Mc’ is often used before a name to describe the noun that follows and the wording ‘OF DUMFRIES’ is less dominant and, for at least a part of the public, also weak.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods at issue are found to be identical and they target the public at large whose level of attention is average. The earlier mark has inherently a normal degree of distinctiveness.

The marks are visually similar to an average degree, aurally to a high degree and conceptually they are similar to at least an average degree.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods that it designates. It constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of goods, or to create a modernised version of the mark.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must trust in the imperfect picture of them that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 16 202 145 for the word mark ‘GEORGE’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, European trade mark registration No 16 202 145 for the word mark ‘GEORGE’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR in relation to the earlier registered trade mark and Article 8(4) EUTMR, in relation to other non-registered trade marks.

The applicant refers to previous decisions of the Office to support its arguments of no likelihood of confusion, namely ‘GEORGE’ versus ‘AVENUE GEORGE V’ (06/05/2019, B 3 049 380) and ‘GEORGE’ versus ‘AVENUE GEORGE CINQ PARIS’ (18/04/2019, B 3 049 362).

However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The case (B 3 049 380) referred to by the applicant is not very relevant to the present proceedings. This is because the marks differ visually and aurally in the (sound of) the words ‘AVENUE’ and the Roman letter ‘V’, while in the present case the word ‘GEORGE’, being by far the largest part of the most dominant parts of the contested sign, is only preceded by the two letters ‘Mc’, which describe the following word ‘GEORGE’ on which the focus will lie, as explained above. Furthermore, in that case, the marks were not conceptually similar, as the words ‘AVENUE GEORGE V’ indicated an address of a street dedicated to a monarch, while the earlier mark only referred to a male first name. The marks were conceptually dissimilar in that case. In addition, in the present case, the words ‘Mc George’ are clearly the most dominant elements of the contested sign, whereas in the case mentioned by the applicant, there were no (more) dominant elements. Furthermore, the other case (B 3 049 362) is not relevant for a similar reasoning as, with B 3 049 380, the only difference is that in this opposition the contested mark also had the additional word ‘PARIS’ and the Roman letter ‘V’ was changed by the French word ‘CINQ’ (having the same concept as in the other case indicating additionally the city (PARIS), where this street is located). For these reasons, the Opposition Division finds that these decisions are not comparable with the case at issue. Therefore, the applicant’s claim must be set aside.

In its observations, the applicant argued that there are many trade marks including the element ‘GEORGE’, which might be interpreted as an indication of the applicant, and that the earlier mark has a lower distinctive character. In support of its argument, the applicant referred to several trade mark registrations in the UK and EU registers. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘GEORGE’. Under these circumstances, the applicant’s claim must be set aside.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michal KRUK

Chantal VAN RIEL

Helen Louise MOSBACK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.